Wednesday, October 08, 2014

How to analyze fame on the pleadings

Leapers alleged trade dress rights “in the distinctive
scalloping design applied to the adjustment knobs and bells of its rifle scopes
and/or sights” which were allegedly both “distinctive and non-functional” as
well as “famous and … widely recognized by the general consuming public of the
United States as a designation for the source of the goods of Leapers.” Defendants allegedly infringed and diluted the
mark.

The description of the alleged trade dress was sufficiently
precise to sustain the infringement claims, and was identifiable in the photos
attached to the complaint.Defendants
argued that the grooves served a function, and that Leapers didn’t plead
nonfunctionality with sufficient particularity.“Although the court will be keen to learn how Plaintiff’s ‘scalloping’
design is no more than decoration, that it is neither in any way ‘essential to
the use or purpose of the article,’ nor a feature that significantly ‘affects
the cost or quality of the article,’ at the pleadings stage a simple, and
illustrated, assertion of non-functionality shall be sufficient.” Likewise, the
complaint’s allegations about Leapers’ efforts over the past twenty years in
advertising and otherwise developing its marks was enough to plead secondary
meaning.

Not so fame.Under the case law, famous
marks include Audi, Victoria’s Secret, Nissan, Nike, Rolex, Pepsi, and “the iconic ...
classic Hershey’s bar” design. Niche
fame isn’t enough.Grease pumps, the
Texas Longhorns logo, MENSA, Quicken Loans, and the red seal on Maker’s Mark
whisky aren’t famous.Even assuming fame
in the firearms community, “it is implausible that Leapers can support its conclusory
assertion that Leapers’ ‘marks have become distinctive and famous and are
widely recognized by the general consuming public of the United States.’” (Footnote: the court comments that Maker’s
Mark didn’t appeal its loss on dilution, “which is fitting given that Maker’s
Mark is best undiluted.”Cute—if not
entirely logical.)

That’s the way to do a fame analysis on the pleadings.Later in the day I’ll have another case that,
in evaluating a defendant’s default, wrongly accepts a ridiculous and similarly
conclusory allegation of federal fame. "Famous" here is a legal conclusion, not a factual allegation, given that fame is defined using a multifactor test in the statute.

Creative Commons/disclaimer

Text on this blog is licensed under a Creative Commons Attribution 2.5 License. Pictures and works quoted may be subject to other parties' copyrights.
I speak for myself. On this blog, I do not and cannot speak for Georgetown Law, the Organization for Transformative Works and/or AO3.